Need an NDA to talk to patent attorney?
It’s a common question I get from startups, inventors, entrepreneurs and basically anyone starting up a new venture who hasn’t already worked with our firm. In most cases, a well drafted non-disclosure agreement (NDA) is a prudent way to protect your idea as you’re talking to service providers. Attorneys, however, are governed by strict rules and codes of professional conduct relating to communications with clients (e.g., see California Evidence Code Section 952, California Rules of Professional Conduct Rule 3-100, and California Business and Professions Code Section 6068).
Privileged communications even if you do not hire
What if you wish to consult with a few different patent attorneys before engaging the right one? The State Bar of California has issued a written opinion stating that even if you’re not a client, an attorney may have a duty to keep your communications confidential if the attorney’s words or actions “induce in the speaker a reasonable belief that the speaker is consulting the attorney, in confidence, in his professional capacity to retain the attorney or to obtain legal services or advice.” (Formal Opinion No. 2003-161).
Other state bars may have issued similar opinions regarding confidentiality of communications with potential clients. If you’re still uncomfortable sharing the details of your invention, then keep the communications general. For example, you can share the general subject matter and/or industry of your idea: “I have an idea for a new [device/app/process] to be used in/by [field/industry/target]. That way, the IP attorney can suggest next steps, rough costs and general timelines without getting into any potential conflicts of interest.
If you’re planning on speaking to a patent agent, it may be wise to have an NDA signed before disclosing your idea since patent agents are not lawyers.
Why our firm does not sign NDAs
Our firm constantly receives inquiries from potential clients. I am thankful for potential clients that reach out even if they do not engage us. My hope is that they receive something useful from me or my blog that will help them in their endeavors. If the potential client does not engage our firm, we need to have the flexibility to represent others who might be involved in a similar space or technology. Signing an NDA for a potential client that ends up not engaging us might preclude us from helping other clients in a related field.
Keep it general without an NDA
If you are uncomfortable disclosing details of your invention without a signed NDA, then keep it general. Chances are, a helpful prospective patent attorney may be able to answer most of your questions without knowing the specific features of your concept. Any deeper analyses of the novelty of your invention would likely require a patentability search anyways.